Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 8
`Entered: October 28, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOPRO, INC.,
`Petitioner,
`
`v.
`
`CONTOUR, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01078
`Patent 8,896,694 B2
`____________
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`NEIL T. POWELL, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`Paper 8
`Entered: October 28, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOPRO, INC.,
`Petitioner,
`
`v.
`
`CONTOUR, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01078
`Patent 8,896,694 B2
`____________
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`NEIL T. POWELL, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
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`IPR2015-01078
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`
`Petitioner GoPro, Inc. filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1–20 of U.S. Patent No. 8,896,694 B2
`(Ex. 1002, “the ’694 patent”) pursuant to 35 U.S.C. § 311(a). Patent Owner
`Contour, LLC filed a Preliminary Response (Paper 6, “Prelim. Resp.”)
`pursuant to 35 U.S.C. § 313. We have jurisdiction under 35 U.S.C. § 314
`and 37 C.F.R. § 42.4(a). Pursuant to 35 U.S.C. § 314(a), the Director may
`not authorize an inter partes review unless the information in the petition
`and preliminary response “shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” For the reasons that follow, we have decided to
`institute an inter partes review as to claims 1–20 on certain grounds of
`unpatentability.
`
`
`I. BACKGROUND
`A. The ’694 Patent1
`The ’694 patent describes an “integrated hands-free, [point-of-view
`(POV)] action sports video camera or camcorder that is configured for
`remote image acquisition control and viewing.” Ex. 1002, col. 1, ll. 16–19.
`According to the ’694 patent, “integrated hands-free, POV action sports
`video cameras” available at the time of the invention were “still in their
`infancy and may be difficult to use.” Id. at col. 1, ll. 46–51, Figs. 2A, 2B.
`The disclosed device uses global positioning system (GPS) technology to
`track its location during recording and a wireless connection protocol, such
`as Bluetooth, to “provide control signals or stream data to [the] wearable
`
`
`1 The ’694 patent is a continuation of U.S. Patent No. 8,890,954 B2
`(Ex. 1001), which is being challenged in Case IPR2015-01080.
`
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`video camera and to access image content stored on or streaming from [the]
`wearable video camera.” Id. at col. 1, ll. 55–64, col. 16, ll. 52–62.
`Figure 3A of the ’694 patent is reproduced below.
`
`
`As shown in Figure 3A, digital video camera 10 comprises camera
`housing 22, rotatable lens 26, image sensor 18 (not shown), such as a
`complementary metal-oxide semiconductor (CMOS) image capture card,
`microphone 90, and slidable switch activator 80, which can be moved to on
`and off positions to control recording and the storage of video. Id. at col. 5,
`ll. 41–64, col. 8, l. 66–col. 9, l. 52. “When recording video or taking
`photographs in a sports application, digital video camera 10 is often
`mounted in a location that does not permit the user to easily see the camera.”
`Id. at col. 19, ll. 37–39. Digital video camera 10, therefore, includes
`wireless communication capability to allow another device, such as a
`smartphone or tablet computer executing application software, to control
`camera settings in real time, access video stored on the camera, and act as a
`“viewfinder” to “preview what digital video camera 10 sees” and allow the
`user to check alignment, light level, etc. Id. at col. 19, l. 40–col. 20, l. 49.
`
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`
`B. Illustrative Claim
`Claim 1 of the ’694 patent recites:
`1. A point of view digital video camera system,
`comprising:
`an integrated hands-free portable viewfinderless video
`camera, the video camera including a lens and an image sensor,
`the image sensor capturing light propagating through the lens
`and representing a scene to be recorded, and the image sensor
`producing real time video image data of the scene without
`displaying the scene to a user of the video camera, wherein the
`real time video image data of the scene relates to an activity in
`which the user of the video camera is about to engage, the video
`camera comprising:
`a camera processor for receiving the video image data
`directly or indirectly from the image sensor, and
`a wireless connection protocol device operatively
`connected to the camera processor to send real time video
`image content by wireless transmission directly to and receive
`control signals or data signals by wireless transmission directly
`from a wireless connection-enabled controller, wherein
`the camera processor is configured to:
`generate the video image content simultaneously at
`a first resolution and at a second resolution, the video
`image content at the first resolution and the second
`resolution corresponding
`to
`the video
`image data
`representing the scene to be recorded, wherein the first
`resolution is lower than the second resolution,
`stream the real time video image content at the
`first resolution using the wireless connection protocol
`device to the wireless connection-enabled controller
`without displaying the video image content at the video
`camera,
`receive the control signals for adjusting image
`capture settings of the video camera,
`
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`adjust the image capture settings of the video
`camera prior to recording the scene, and
`in response to a record command, cause the video
`image content at the second resolution to be stored at the
`video camera;
`a mounting interface coupled to the video camera;
`a mount configured to be mounted to the body, a
`garment, or a vehicle of the user of the video camera, the mount
`configured to receive the mounting interface for rotatably
`mounting the camera on the body, the garment, or the vehicle of
`the user of the video camera, the mounting interface and the
`mount further configured for manual adjustment of the video
`camera with respect to the user of the video camera; and
`the wireless connection-enabled controller for controlling
`the video camera,
`the controller comprising executable
`instructions for execution on a personal portable computing
`device operable by a user of the personal portable computing
`device, wherein when executed, the executable instructions
`cause the personal portable computing device to:
`receive video image content at the first resolution
`directly from the video camera,
`display the video image content at the first
`resolution on a display of the portable computing device
`for adjustment of the image capture settings prior to the
`user of the video camera recording the activity, the video
`image content at the first resolution comprising a preview
`image of the scene which is not recorded on the camera
`or the personal portable computing device, the preview
`image allowing the user of the video camera to manually
`adjust an angle of the video camera with respect to the
`user of the video camera, and
`the wireless
`to
`generate
`the control signals
`connection protocol device on the video camera to allow
`the user of the personal portable computing device to
`remotely adjust the image capture settings prior to the
`video camera recording the activity, wherein the control
`
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`
`Boland and GoPro
`Catalog
`Boland, GoPro
`Catalog, and
`Ueyama
`
`signals comprise at least one of frame alignment,
`multi-camera synchronization, remote file access, data
`acquisition, and resolution setting adjustment and at least
`one of
`lighting setting adjustment, audio setting
`adjustment, and color setting adjustment.
`
`C. The Prior Art
`Petitioner relies on the following prior art:
`U.S. Patent No. 7,362,532 B2, issued Apr. 22, 2008
`(Ex. 1013, “Ueyama”);
`U.S. Patent Application Publication No. 2010/0118158
`A1, published May 13, 2010 (Ex. 1010, “Boland”); and
`GoPro Sales Catalog (Ex. 1011, “GoPro Catalog”).2
`
`D. The Asserted Grounds
`Petitioner challenges claims 1–20 of the ’694 patent on the following
`grounds:
`References
`
`Basis
`35 U.S.C. § 103(a)3
`
`35 U.S.C. § 103(a)
`
`Claims Challenged
`
`1–13, 15, 16, and
`18–20
`14 and 17
`
`
`2 When citing the GoPro Catalog, we refer to the page numbers at the
`bottom-right corner of each page. See 37 C.F.R. § 42.63(d)(2).
`
` 3
`
` The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’694
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`
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`
`E. Claim Interpretation
`The Board interprets claims using the “broadest reasonable
`construction in light of the specification of the patent in which [they]
`appear[].” 37 C.F.R. § 42.100(b); see Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs.,
`LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Under this standard, we
`interpret claim terms using “the broadest reasonable meaning of the words in
`their ordinary usage as they would be understood by one of ordinary skill in
`the art, taking into account whatever enlightenment by way of definitions or
`otherwise that may be afforded by the written description contained in the
`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`1997). We presume that claim terms have their ordinary and customary
`meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007) (“The ordinary and customary meaning is the meaning that the term
`would have to a person of ordinary skill in the art in question.” (internal
`quotation marks omitted)). A patentee, however, may rebut this
`presumption by acting as his own lexicographer, providing a definition of
`the term in the specification with “reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The parties
`provide proposed interpretations for various limitations of the claims. See
`Pet. 15–18; Prelim. Resp. 17–20. For purposes of this Decision, we interpret
`two claim limitations as follows.
`
`
`1. “Scene to be Recorded” (Claims 1 and 11)
`Petitioner argues that the term “scene to be recorded” should be
`interpreted to mean “a scene viewed by the camera prior to recording.”
`
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`Pet. 16–17. Patent Owner does not provide an alternative interpretation in
`its Preliminary Response. Prelim. Resp. 17–20. Based on the current
`record, we agree that Petitioner’s proposed interpretation is the broadest
`reasonable interpretation in light of the Specification. As Petitioner points
`out, claim 1 recites an image sensor “capturing light propagating through the
`lens and representing a scene to be recorded, . . . the image sensor producing
`real time video image data of the scene,” and a camera processor configured
`to generate video image content “corresponding to the video image data
`representing the scene to be recorded” and “adjust the image capture settings
`of the video camera prior to recording the scene.” See Pet. 16–17. Claim
`11 includes similar language. On this record, applying the broadest
`reasonable interpretation of the claims in light of the Specification, we
`interpret “scene to be recorded” to mean a scene viewed by the camera prior
`to recording.
`
`
`2. “Record” (Claims 1, 3, and 11)
`Petitioner argues that the term “record” should be interpreted to mean
`“store in response to a record command.” Pet. 17–18. As support, Petitioner
`cites the recitation in claim 1 of a camera processor “configured to . . . in
`response to a record command, cause the video image content at the second
`resolution to be stored at the video camera,” the Specification’s disclosure of
`a “Start Recording command signal,” and the testimony of Kendyl A.
`Román regarding how a person of ordinary skill in the art would have
`understood the term. Id. (citing Ex. 1002, col. 25, ll. 12–14, Ex. 1007 ¶ 97).
`Patent Owner argues that the term “record” should be interpreted to mean
`“to store,” citing portions of the Specification using both “record” and
`
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`“store,” and a dictionary definition of “record.” Prelim. Resp. 18–20 (citing
`Ex. 1002, Ex. 2003, 974).
`Based on the current record, we agree with Patent Owner that the term
`“record” in the claims, by itself, is not limited to storing only in response to
`a record command. As Patent Owner correctly points out, various claims
`already recite storing video image content based on or in response to a
`“record command.” See id. at 19; Power Mosfet Techs., L.L.C. v. Siemens
`AG, 378 F.3d 1396, 1410 (Fed. Cir. 2004) (“interpretations that render some
`portion of the claim language superfluous are disfavored”). For example,
`claim 1 recites a camera processor configured to “adjust the image capture
`settings of the video camera prior to recording the scene” and, “in response
`to a record command, cause the video image content at the second resolution
`to be stored at the video camera.” Claims 3 and 11 similarly recite storing
`based on or in response to a “record command.” Further, we do not see any
`language in the Specification limiting the term “record” to storing only in
`response to a record command. Thus, we are not persuaded that “record,”
`by itself, should be interpreted to require a record command as Petitioner
`suggests. On this record, applying the broadest reasonable interpretation of
`the claims in light of the Specification, we interpret “record” to mean store.
`
`II. DISCUSSION
`A. Obviousness Ground Based on Boland and the GoPro Catalog
`(Claims 1–13, 15, 16, and 18–20)
`Petitioner contends that claims 1–13, 15, 16, and 18–20 are
`unpatentable over Boland and the GoPro Catalog under 35 U.S.C. § 103(a),
`relying on the supporting testimony of Mr. Román. Pet. 25–53. We are
`
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`persuaded that Petitioner has established a reasonable likelihood of
`prevailing on its asserted ground for the reasons explained below.
`
`
`1. Boland
`Boland describes a “video recording camera system configured to
`record video from a user’s perspective,” comprising a headset positioned on
`the wearer’s ear and a wireless handset. Ex. 1010 ¶¶ 6, 30, Fig. 1.
`Figure 2A of Boland is reproduced below.
`
`
`Figure 2A depicts headset 100 comprising lens 105, image sensor(s) 205,
`multimedia processor 210, storage medium 228, and radio 240, which
`communicates with wireless communication handset 201 over
`communication channel 202 (e.g., Bluetooth). Id. ¶¶ 32–35. Handset 201
`includes “view screen 303 . . . to serve as a viewfinder for the headset 100
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`and . . . further provide for previewing of video recorded by the
`headset 100,” and video control soft keys 307 to allow the user to control the
`operation of headset 100. Id. ¶¶ 46, 58, 61, 63, Fig. 3A. Video data is
`stored and overwritten, in a first in-first out manner, in non-volatile recorded
`video data buffer 229 of storage medium 228 for “continuous video
`recording,” and the user may save particular video portions as clip files 231.
`Id. ¶¶ 35, 40–42, 48.
`
`
`2. GoPro Catalog
`The GoPro Catalog is a product catalog for Petitioner’s
`“HD MotorsportsHERO” product. Ex. 1011, 2. It describes a “1080p
`[high-definition (HD)] wearable camera” and “optional wireless remote with
`an omni-directional range of 30 feet.” Id. at 3, 6. The images shown on
`pages 2 and 15 of the catalog are reproduced below.
`
`
`
`The images above depict the camera attached to a user’s helmet, and the
`wireless remote control, which the GoPro Catalog describes as follows:
`“With a 30’ / 10m range and the ability to wirelessly transmit a preview
`image of your photo or video before you start recording, the wireless remote
`opens up a world of filming opportunities and convenience.” Id. at 15.
`
`
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`
`3. Level of Ordinary Skill in the Art
`“Section 103(a) forbids issuance of a patent when ‘the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405
`(2007) (quoting 35 U.S.C. § 103(a)). Mr. Román testifies that a person of
`ordinary skill in the art would have had “education in computer science or
`electrical engineering and experience in the field of digital video cameras,
`and knowledge of the scientific literature concerning the same.” Ex. 1007
`¶ 37; see Pet. 18–19. According to Mr. Román, “[t]he education and
`experience levels may vary between persons of ordinary skill, with some
`persons holding a basic Bachelor’s degree with three years of relevant work
`experience, and others holding a Masters or Ph.D. but having one to two
`years of experience.” Ex. 1007 ¶ 37. Patent Owner does not dispute this
`assessment in its Preliminary Response. Based on the current record,
`including our review of the ’694 patent and the types of problems and
`solutions described in the ’694 patent and cited prior art, we determine that a
`person of ordinary skill in the art would have had at least a bachelor’s degree
`in computer science, electrical engineering, or a similar discipline, and some
`experience creating, programming, or working with digital video cameras,
`such as POV action sports video cameras. See Ex. 1002, col. 1, ll. 14–51.
`We apply this level of ordinary skill in the art for purposes of this Decision.
`
`
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`
`4. Whether Petitioner Has Made a Threshold Showing That
`The GoPro Catalog Is Prior Art
`As an initial matter, we must determine whether Petitioner has made a
`threshold showing that the GoPro Catalog is a prior art printed publication
`under 35 U.S.C. § 102(b). See Pet. 24. At this stage of the proceeding, the
`question is not whether a preponderance of the evidence supports the GoPro
`Catalog being prior art, but rather whether Petitioner has provided sufficient
`evidence, based on the current record, to show a reasonable likelihood of
`prevailing on its asserted grounds. Compare 35 U.S.C. § 314(a) (regarding
`threshold for instituting a trial) with 35 U.S.C. § 316(e) (regarding proving
`unpatentability of a claim).
`The determination of whether a document is a “printed publication”
`under 35 U.S.C. § 102 involves a case-by-case inquiry into the facts and
`circumstances surrounding its disclosure to members of the public. In re
`Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). To qualify, a document
`must have been “‘sufficiently accessible to the public interested in the art’”
`before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)
`(citation omitted). “A reference is publicly accessible ‘upon a satisfactory
`showing that such document has been disseminated or otherwise made
`available to the extent that persons interested and ordinarily skilled in the
`subject matter or art exercising reasonable diligence, can locate it.’”
`Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350–51 (Fed. Cir. 2008)
`(citation omitted).
`Petitioner argues that the GoPro Catalog is a prior art printed
`publication because it was “distributed publicly at least as early as July
`2009, when [Petitioner] attended the 2009 Tucker Rocky Dealer Show and
`
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`handed the GoPro Catalog to potential customers.” Pet. 24. As support,
`Petitioner cites the testimony of Damon Jones, a Senior Product Manager
`employed by Petitioner since 2008. Ex. 1012 ¶¶ 1–2. Mr. Jones testifies
`that as part of his employment, he “participate[s] in and [is] otherwise
`familiar with various trade organizations relevant to [Petitioner’s] business,”
`including Tucker Rocky Distributing for “vendors, dealers, retailers,
`customers and enthusiasts of . . . motorcycles and outdoor vehicles, and
`associated accessories.” Id. ¶ 4. Mr. Jones states that he attended the
`Tucker Rocky Dealer Show on July 23–27, 2009 in Fort Worth, Texas,
`which had “approximately 150 vendors,” including Petitioner, and
`“over 1000 attendees,” including “actual and potential dealers, retailers, and
`customers of portable, point of view video cameras.” Id. ¶¶ 5–7 (citing
`Ex. A). Mr. Jones further states that he manned Petitioner’s booth at the
`show, where Petitioner displayed the GoPro Catalog and “distributed
`hundreds of copies . . . without restriction to attendees.” Id. ¶¶ 8–9 (citing
`Ex. B). We are persuaded, based on the current record, that Mr. Jones’s
`testimony amounts to a threshold showing of public accessibility.
`Patent Owner argues that Petitioner has not met its burden for five
`reasons. Prelim. Resp. 4–17. First, Patent Owner argues that the GoPro
`Catalog has no date on its face and thus fails to indicate when it might have
`been publicly available. Id. at 6. Patent Owner, however, does not cite any
`authority—and we are aware of none—imposing a strict requirement that a
`document must list a date to qualify as a prior art printed publication.
`Rather, the determination requires a case-by-case inquiry into all of the facts
`and circumstances surrounding the document’s alleged disclosure to the
`public. Klopfenstein, 380 F.3d at 1350.
`
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`Second, Patent Owner contends that Petitioner offers no evidence that
`the GoPro Catalog was disseminated or otherwise made available to the
`public interested in the art, pointing to Petitioner’s proposed definition of a
`person of ordinary skill in the art as someone with education in computer
`science or electrical engineering. Prelim. Resp. 7–9. Patent Owner also
`argues that Tucker Rocky Distributing is a trade organization for
`motorcycles and other action sports vehicles, and its dealer show is meant
`only for sales and marketing personnel. Id. These arguments are not
`persuasive, as they overlook other aspects of Mr. Jones’s testimony
`discussing action sports vehicle “accessories.” For example, Mr. Jones
`testifies that
`Tucker Rocky is a trade organization directed to motorcycles
`and other action sports vehicles, such as motorbikes, all-terrain
`vehicles (ATVs), snowmobiles and watercraft, as well as
`apparel, parts and accessories related thereto. The Tucker
`Rocky trade organization is for vendors, dealers, retailers,
`customers and enthusiasts of such motorcycles and outdoor
`vehicles, and associated accessories. The accessories include
`video cameras that are mountable, for example, to a rider’s
`helmet or vehicle so as to capture video from the rider’s
`perspective.
`Ex. 1012 ¶ 4 (emphasis added). Based on the current record, we are
`persuaded that those interested in digital video cameras of the type described
`in the ’694 patent would have been interested in events like the Tucker
`Rocky Dealer Show where the GoPro Catalog was available. See, e.g.,
`Ex. 1002, col. 1, ll. 14–25 (“First-person video cameras are a relatively new
`product category that have been adapted to capture POV video by action
`sports enthusiasts in a hands-free manner.”). Further, the fact that Petitioner
`chose to market its product at the show is at least some indication that
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`individuals interested in POV action sports video cameras likely would be in
`attendance.
`Third, Patent Owner argues that Petitioner offers no evidence that the
`Tucker Rocky Dealer Show was advertised or announced to the public.
`Prelim. Resp. 9–11. Patent Owner cites a printout of Tucker Rocky
`Distributing’s website from 2009 stating that “[w]e do not sell direct to the
`public,” and a Facebook page indicating that the 2013 Tucker Rocky Dealer
`Show was not open to the public. Id. (citing Exs. 2001, 2002). Patent
`Owner’s evidence is not persuasive at this stage of the proceeding.
`Mr. Jones testifies that the 2009 Tucker Rocky Dealer Show was attended by
`“over 1000 attendees,” including “actual and potential dealers, retailers, and
`customers of portable, point of view video cameras.” Ex. 1012 ¶¶ 5, 7
`(emphasis added). Even if Patent Owner is correct that a customer could not
`have purchased a camera from Petitioner at the show, that does not mean
`necessarily that the GoPro Catalog was not accessible to customers, dealers,
`and retailers at the show. Likewise, without more, whether the 2013 show
`was open to the public is not germane to the 2009 show.
`Fourth, Patent Owner challenges Mr. Jones’s declaration as based on
`inadmissible hearsay and not authenticating properly the GoPro Catalog.
`Prelim. Resp. 11–15. We do not find those arguments persuasive at this
`stage of the proceeding. A mechanism exists, however, for Patent Owner to
`challenge the admissibility of Mr. Jones’s declaration (and other evidence
`submitted by Petitioner) after institution. See 37 C.F.R. § 42.64; Prelim.
`Resp. 12 n.5.
`Fifth, Patent Owner argues that Mr. Jones provides no evidence to
`support his statement that after the show and “‘prior to September 13, 2009,
`
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`[Petitioner] continued to distribute and otherwise make available the GoPro
`Catalog to [Petitioner’s] actual and potential customers, dealers and retailers
`through its website, direct mail, and other means of distribution.’” Prelim.
`Resp. 15–16 (citing Ex. 1012 ¶ 11). Because Petitioner’s assertions
`regarding the GoPro Catalog’s availability at the Tucker Rocky Dealer Show
`in 2009 are sufficient for a threshold showing, however, we need not
`determine at this time any public accessibility that may have occurred
`subsequent to the show. Patent Owner will have the opportunity to
`challenge all of Petitioner’s assertions during trial, including the ability to
`cross-examine Mr. Jones and object and move to exclude his testimony if
`warranted, and Petitioner will have the opportunity to respond.
`Based on the current record, Petitioner has demonstrated a reasonable
`likelihood of prevailing on its assertion that the GoPro Catalog is a prior art
`printed publication under 35 U.S.C. § 102(b). The fact that we institute an
`inter partes review on a not fully developed record is not dispositive of the
`ultimate legal conclusion as to whether the GoPro Catalog qualifies as prior
`art. That conclusion will be based on a preponderance of the fully
`developed record evidence.
`
`
`5. Claims 1–13, 15, 16, and 18–20
`a. Independent Claims 1, 3, and 11
`Petitioner relies on Boland for the majority of the limitations of
`claim 1. Pet. 25–44. For example, Petitioner argues that Boland teaches a
`“video camera” (i.e., headset 100) comprising a (1) “lens” (i.e., lens 105),
`(2) “image sensor” (i.e., image sensor(s) 205) producing “real time video
`image data” (i.e., input image signal(s) 209), (3) “camera processor”
`
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`17
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`(i.e., processor 210), and (4) “wireless connection protocol device”
`(i.e., radio 240) to send “real time video image content” (i.e., video data 216)
`to, and receive control signals or data signals from, a “wireless
`connection-enabled controller” (i.e., handset 201). Id. Petitioner relies on
`the combined teachings of Boland and the GoPro Catalog for certain
`limitations of claim 1, such as an image sensor capturing light representing a
`“scene to be recorded” (e.g., using a controller as a viewfinder to preview
`video before recording), generating video image content at two different
`resolutions, adjusting image capture settings prior to recording, and a
`“mount” and “mounting interface.” Id. Petitioner argues that it would have
`been obvious to combine Boland’s teachings with the GoPro Catalog’s
`teaching of a camera and wireless remote control, as well as the GoPro
`Catalog’s teaching of known mounting devices. Id. at 30–32, 34–40.
`We have reviewed Petitioner’s analysis and the supporting testimony of
`Mr. Román, and are persuaded that Petitioner has demonstrated a reasonable
`likelihood of prevailing as to claim 1, as well as claims 3 and 11. See id.
`at 25–51 (citing Ex. 1007).
`Patent Owner argues that Boland and the GoPro Catalog do not teach
`or suggest certain limitations of independent claims 1, 3, and 11 directed to
`the generation of two types of video image content. Prelim. Resp. 21–30.
`Specifically, claim 1 recites “real time video image data,” “real time video
`image content,” and a camera processor configured to “generate the video
`image content simultaneously at a first resolution and at a second resolution,
`the video image content at the first resolution and the second resolution
`corresponding to the video image data representing the scene to be recorded,
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`wherein the first resolution is lower than the second resolution.” Claims 3
`and 11 recite similar limitations.
`According to Patent Owner, Boland’s “preview” functionality is used
`for “watching video at the handset that has already been captured and stored
`by the headset”; therefore, the video is generated from, and corresponds to,
`previously stored content, not real time video image data representing the
`scene to be recorded, as required by the claims. Id. at 21–24 (emphasis
`omitted). Patent Owner also argues that Boland discloses, in a different
`embodiment, streaming full resolution video to the handset, but never
`discloses streaming a low resolution preview. Id. at 24–26. Finally, Patent
`Owner challenges Petitioner’s reliance on the GoPro Catalog because the
`reference does not disclose technical details of its wireless remote control or
`explain what it means by “preview image” (i.e., video or a single image),
`and argues that Petitioner fails to explain why or how a person of ordinary
`skill in the art would have combined the teachings of Boland and the GoPro
`Catalog. Id. at 26–27, 33–35.
`Patent Owner’s arguments are not persuasive on this record. As
`Petitioner points out, Boland discloses previewing video in a “low resolution
`format” from recorded video data buffer 229 or video clip file 231. See
`Pet. 34–36 (citing Ex. 1010 ¶¶ 53, 69). Boland further states:
`[V]ideo frames streamed from the headset 100 . . . as output
`from the recorded video data buffer 229 . . . may be viewed
`and/or recorded to the handset 201 in substantially real time.
`As such, the video data 216A may include . . . video data sent
`as a ‘live’ video feed.
`Ex. 1010 ¶ 73 (emphasis added). Other portions of Boland confirm that a
`“real time” “live video feed” may be generated from recorded video data
`buffer 229, and that the handset may be used as a “viewfinder” for viewing
`
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`what the headset currently is seeing. See id. ¶¶ 9, 58 (“view screen 303 is to
`serve as a viewfinder for the headset 100 and may further provide for
`previewing of video recorded by the headset 100”), 61 (“view screen 303
`serving as a preview screen or a ‘view finder’ similar to a conventional
`video recorder”), 69 (“handset 201 is also used to preview (perhaps in a low
`resolution format) video data that is stored on the headset 100 either in the
`non-volatile recorded video data buffer 229 or as a distinct video clip
`file 231”), 75. Thus, Boland teaches both generating low resolution video
`from recorded video data buffer 229, and video being streamed in real time
`from recorded video data buffer 229. Accordingly, we are not persuaded by
`Patent Owner’s contention that Boland’s preview video from recorded video
`data buffer 229 is previously stored rather than generated from real time
`video data. See Prelim. Resp. 21–24.
`Nor do we view Boland, based on the current record, as disclosing
`separate “preview” and “streaming” embodiments as Patent Owner suggests.
`See id. at 24–26. Rather, we view the cited disclosures as addressing
`potential capabilities of Boland’s overall system. For instance, all of the
`cited disclosures reference the same elements of Figure 2A (e.g., processor
`210, recorded video data buffer 229), indicating that they are part of the
`same overall system.
`Further, Petitioner’s contention that it would have bee
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